"America Invents Act" Reforms Patent Law
On September 16, 2011, President Obama signed the “America Invents Act” (AIA) into law, thereby enacting the most momentous change to the United States patent system since 1952.
The intention of the America Invents Act is to speed up the patent process, to encourage innovation, to spur job creation, and to align United States patent laws more closely with international patent laws.
Now that the Act is law, the United States Patent Office (USPTO) will have to write new rules to put the AIA’s provisions into use. Under the AIA, many of the new requirements won’t go into effect right away. In addition, many aspects of the law will be tested in the courts. For all these reasons, it will be years before the full impact of the AIA is known.
The Office of Technology Management (OTM) is closely monitoring the evolution of the new system and working with our IP attorneys to continue making decisions in the best interests of the University’s intellectual property.
Although much remains unknown, the OTM believes the new law will NOT adversely impact our ability to commercialize the University’s intellectual property.
What follows is an outline of the most significant changes to the patent system as well as a timeline of when they go into effect and answers to some frequently asked questions. We will update information here as it becomes available.
Major Changes to Patent Law
First-Inventor-to-File provision – Effective March 16, 2013
One of the most significant and most discussed aspects of the AIA is the change from a “first-to-invent” patent system to a “first-inventor-to-file” patent system. This has several implications on the scope of what publications (“prior art”) can be used against your application to defeat patentability.
Under the old system, a one-year grace period consisting of the time between a public disclosure and the filing of U.S. patent application covered all prior art, both your own and that of others. Under the AIA, a one-year grace period is given to the inventor only for his/her own publications. Publications by others during the grace period are now prior art* to the inventor’s application if filed later, which can be used to defeat patentability. . The grace period also extends to the inventor for publications by others if the publication is derived from the inventor’s invention (but the burden of proof is on the inventor to demonstrate such derivation.)
With the AIA, one implication of this provision is that the body of prior art available to be used against an application is greatly broadened, which can limit your ability to secure patent protection compared to the present day. On balance, this can be mitigated by early disclosure to the OTM and prompt patent filing before publication, or as soon as possible after publication.
*Prior art refers to any information that is disclosed to the public in any form about an invention before a given date. To be patentable, your invention must be considered novel and not-obvious over all such prior art.
Changes to Patentable Subject Matter – Effective September 16, 2011
No patents will be issued with claims “directed to or encompassing a human organism.” This was worded very broadly in the AIA and the OTM anticipates that it will take court review to define what this statement entails.
Inventor Oath – Effective September 16, 2012
The previous law required that at the time of filing each inventor execute an oath or declaration that the invention was made by him or her. Under the new law, an organization may file an application without a declaration if the inventor was under an obligation to assign to the organization. Some implications of this provision include potential cost savings and reduced resources usage.
Pre-Issuance Submissions – Effective September 16, 2012
Once your patent application is published, third parties are allowed to submit to the USPTO information about prior art with a statement of relevance of that prior art. The third party may remain anonymous. Like post-grant proceedings, this provision could increase the body of prior art available and increase the cost and duration of prosecution.
Post-Grant Review – Effective September 16, 2012
Two provisions allow a separate party to submit evidence challenging the validity of any claims in an issued patent. In both cases, the challenge must be viewed by the PTO as having a reasonable likelihood of prevailing. In both cases, the separate party has the burden of proving its case, and the patent owner has the right to amend or cancel claims.
1) Post Grant Review: the request must be filed no later than nine months after the date of issue.
2) Inter Partes Review: the request must be filed nine months or later after the patent has been issued.
Q: Can anyone take an invention and patent it under the new first-to-file provision?
A: No, only the true inventor(s) are able to file a patent application. This provision should be looked at as the ‘first true inventor to file.’ While another cannot steal your idea and legitimately claim your invention as their own, there are times that two different individuals independently come up with a similar invention. In that situation, the first inventor to file will be entitled to the patent.
Q: How does “first-to-file” affect University inventors?
A: The OTM believes that is it important to disclose to the OTM as early as possible. It is appropriate to file a patent application as close to the date of invention as possible, so that no other competing research group’s IP can be published prior to our filing of the patent application.
Q: Is there still a 1 year grace period after an inventor’s publication to file a patent application?
A: Conditionally, yes. But it only covers publications made by the inventor or joint inventor, or by someone who obtained the information directly or indirectly from the inventor or joint-inventor. IF someone independently invents or publishes before you file, you will not be entitled to a patent.
Q: Is it worth it to keep records of ideas for inventions?
A: YES! Notebooks should still be kept from the conception of the idea and throughout the process of inventing because it may still be necessary to provide evidence of being the true inventor in a derivation proceeding. *
Q: How will all of the rules from the PTO and the AIA be defined?
A: As of now, there are many sections of the AIA that are unclear, and there are no rules from the United States Patent and Trademark Office (USPTO). The USPTO is currently writing the rules necessary for execution of the new law’s provisions and the courts will need to decipher many under-defined and undefined terms. This process will take many years and it is likely that Congress will need to get involved and issue “technical amendments” that will fix some of the problematic language in the Act. These amendments are likely to have a substantive impact on this legislation. Unfortunately, this means we must wait and see how the AIA will unfold.
Q: What are some tips for University inventors applicable to the new law?
A: Interact with the OTM as early as possible; faculty members should be aware of potential public disclosures, such as students’ personal websites, use of social media, and YouTube for the posting of draft or otherwise pre-published manuscripts and/or drawings; be aware of the prior art in your field of work including patents, presentations, papers, etc.
*Derivation proceedings refer to situations where two applications have been filed on the same invention and where one inventor derived the invention from the other. These proceedings determine the rightful inventor.